IP Law Daily  First Amendment protects Netflix’s use of ‘Tiger King’ phrase in documentary
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Friday, December 11, 2020

 First Amendment protects Netflix’s use of ‘Tiger King’ phrase in documentary

By Brian Craig, J.D.

The First Amendment bars the trademark claims because the marks are artistically relevant and Netflix’s use did not explicitly mislead.

In a trademark and copyright infringement action brought by Hollywood Weekly Magazine over use of its "Tiger King" mark and magazine content in the Netflix documentary "Tiger King: Murder, Mayhem and Madness," the federal district court in Los Angeles has dismissed the claims. In granting Netflix’s motion to dismiss, the court concluded that the First Amendment barred the Lanham Act claims because the marks are artistically relevant and Netflix’s use did not explicitly mislead. The court also dismissed the copyright infringement claim, concluding that the complaint fails to allege specific facts of copyright ownership to support infringement (Jackson v. Netflix, Inc., December 9, 2020, Scarsi, M.).

Hollywood Weekly Magazine, LLC, and its publisher, claim ownership of the "Tiger King" and "Hollywood Weekly" trademarks. Netflix, Inc. is the writer, producer, owner and distributor of a streaming video series titled "Tiger King: Murder, Mayhem and Madness." Hollywood Weekly claimed it coined the term "Tiger King" in connection with numerous magazines which profiled Joseph Maldonado-Passage, known publicly as the "Tiger King." The documentary chronicles the life and business of Maldonado-Passage, also known as Joe Exotic or the Tiger King.

Hollywood Weekly filed a complaint against Netflix alleging federal trademark infringement under the Lanham Act based on the documentary’s use of the phrase "Tiger King" and copyright infringement based on Netflix’s unauthorized use of the phrase "Tiger King" and magazine articles. In addition, the complaint alleged false designation and trademark dilution under the Lanham Act. Netflix filed a motion to dismiss arguing that the First Amendment barred the Lanham Act claims and that the copyright infringement claim does not adequately allege infringement.

Trademark infringement. The court first concluded that the First Amendment barred the trademark infringement claims. The Ninth Circuit has adopted the Rogers test, based on Rogers v. Grimaldi, 875 F.2d 994 (2d Cir.1984), where an artistic work’s use of a trademark that otherwise would violate the Lanham Act is not actionable unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.

Here, the court found that the use of the "Tiger King" mark satisfied the artistic relevant prong. Use of the Tiger King mark must only have "some relevance" to the documentary to satisfy the artistic relevance prong. The documentary chronicles the life and business of Joe Exotic, known publicly as the Tiger King, who starred in a television series titled "Joe Exotic Tiger King" and sold products branded "Tiger King." The court concluded that the Tiger King mark’s relevance was "above zero," satisfying the artistic relevant requirement.

Additionally, the court found that because the work was not explicitly misleading, it was protected under the Rogers test. The relevant question was whether Netflix’s use of the mark would make the public believe that the magazine, and its publisher, were somehow behind the work or that they sponsor the work. The mere use of a trademark alone cannot suffice to make such use explicitly misleading. The plaintiffs identified no explicit statement in the documentary to suggest sponsorship. Scenes to support the sponsorship theory amounted to nothing more than the type of "mere use" protected under Rogers. Therefore, the court found that Netflix was protected under Rogers because the marks are artistically relevant and Netflix’s use did not explicitly mislead. The court granted Netflix’s motion to dismiss the Lanham Act claims with prejudice because amendment would be futile.

Copyright infringement. The court also dismissed the copyright infringement claim because the complaint failed to describe sufficient details to support infringement. To prove copyright infringement, a plaintiff must demonstrate (1) ownership of the allegedly infringed work and (2) copying of the protected elements of the work by the defendant.

The court found that the allegations in the complaint lacked well-pleaded facts from to plausibly conclude that the magazine owns a valid copyright that Netflix infringed. The complaint failed to provide cogent details concerning what works the registrations cover, or allege which parts of the copyrights Netflix infringed, when, and through what conduct. The only allegations of copyright infringement in the complaint were nothing more than legal conclusions. While the opposition to the motion to dismiss attempted to clarify the factual bases for the copyright claim, these facts were absent from the complaint and the court ignored those facts not in the complaint. The court dismissed the copyright infringement claim without prejudice, permitting the magazine to file a second amended complaint.

This case is No. 2:20-cv-06354-MCS-GJS.

Attorneys: Matthew H. Schwartz (Schwartz Law Firm, LLC) for Prather Jackson and Hollywood Weekly Magazine, LLC. Robert H. Rotstein (Mitchell Silberberg & Knupp LLP) for Netflix, Inc.

Companies: Hollywood Weekly Magazine, LLC; Netflix, Inc.

MainStory: TopStory Trademark Copyright GCNNews CaliforniaNews

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